Intellectual Property for innovation

Andrew Blattman from SPRUSON & FERGUSON Patent and Trade Mark Attorneys, talked on Wednesday 26th March 2008 in Canberra at the second of the Innovation ANU: a staged business and commercialization development seminars. He talked about what patents are and what they are for.

There were about 80 people at this event, many kore than the first seminar. As Dr. Blattman pointed out, this is a large event for a relatively dry subject like patents. The excellent free drinks beforehand may have helped. But I suspect that the idea that students and staff of the university could win thousand of dollars for a bight idea and have access to millions of dollars in venture capital has spread by word of month.

Researchers probably think that IP protection is limited to very tangible inventions, but Dr. Blattman pointed out that particular shades of the color purple has been trademarked, as have made up words and shapes of pharmaceutical tablets. Other IP protect, such as plan breeders rights, and copyright, are available. Different forms of IP, provide different protection. Patents provide protection for the first to patent, whereas copyright and trade secrets will not protect from independent invention.

A patent provides a monopoly for 20 years. In return, the details of the patent must by published within 18 months. The details of patents are available online. There are 45 references to the ANU at the United States Patent and Trademark Office.

the US The process of applying is complex and takes time.

As Dr. Blattman pointed out, there is no exemption from patents for researchers. So researchers need to be aware of patents, as it might stop them using a process in their research, even one they invented.

Business processes can now be patented (I have consulted on some business process patent applications).

To get a patent, the application must be for something legal , useful and not obvious to someone skilled in the field. This can include methods of medical treatment. Patents can be taken out on processes which may not be highly valued, that is for the market to decide. The patent office will search to see if the invention had been previously published. It is important to realize that if the inventor publishes details of the invention before patenting it, this will likely prevent it being patented.

Usually competitors will wait to see if a patent is valuable, before taking legal action to have it invalidated.

More than one patent can be taken out, for example for a formula, how the substance is made, how it is used. The patent does not need to be for a fundamental breakthrough, it can be for a small incremental improvement in some existing process.

There is an important difference between US and most other areas, in that it is "first to invent", that is who can show they invented first gets the patent. Most other places it is first to lodge the patent. It is therefore important to keep good records.

Slides and audio of Dr. Blattman's talk will be available.

ps: The ANU has a very readable and useful 34 page "Manual for the use of ANU Intellectual Property", which includes a flowchart explaining the process. Under this: "... the ANU claims ownership of IP generated by its staff in the course of their employment duties. Students at the ANU own the IP generated by them during their studies.".

The ANU manual also emphasizes the use of laboratory notebooks, to provide evidence of an invention. Unfortunately the manual is out of date. It assumes that written records of research notes are printed on paper and that laboratory notebooks are not electronic. The advice that "It is preferable to make regular hard copy print out of results and paste them into the laboratory notebooks" is unworkable. The ANU needs to revise the manual to provide realistic advice on keeping legally admissible electronic records.

Also the manual does not mention open source or creative commons type licenses.

Also the name of the ANU's commercialization arm which was ANUTECH, needs to be changed to the name adopted in 2004: ANU Enterprise Pty Ltd (this seems to have been missed in the 2006 review of the manual).